Such a pity. Hotels.com tried, tried, tried to obtain a trademark in its name "Hotels.com," but alas the Court of Appeals for the Fed Circuit ruled the mark was a too generic. Too generic? Really? So, my hopes of getting a trademark in "milkdelivery.com" for my new business delivering milk might run into problems as well? Generic. Humph.
The Court said that the USPTO's Trial and Appeal Board's refusal of the registration was appropriate, and affirmed the TTAB's rejection of Hotels.com's argument that the “dot-com” suffix showed converted the generic term “hotels” into a brand name.
Really going out on a limb there, TTAB; bold, controversial assertion of the law.
Of course, in some deference to Hotels.com ("some," meaning not a lot, meaning the subtextual "what the hell were you thinking?" still applies), it appears that the website had originally sought to register its mark for the services of “providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network.” So it wasn't, e.g., just giving people access to hotels? Oh, you see that's where I was mistaken.
Seems the TM examiner had the same thought I did, that “Hotels.com” was “merely descriptive” of hotel reservation services. (No, it's for "providing information . . . .") In any event: denied. Possibly without even visiting the site (which looks a lot like a site where you make hotel reservations, folks), the TTAB affirmed the rejection, finding that “hotels” identified “the central focus of the information and reservation services” provided on the site, and concluding that “hotels.com" was therefore simply a term that identified the focus of the service, and was thus "generic for the services themselves.”
Hotels.com appealed, arguing that the mark was not generic because the Web site Hotels.com does not provide lodging and meals for its users and isn't synonymous with the word “hotel.” It further argued that its name had effectively acquired secondary meaning (or acquired distinctiveness), saying that the mark was widely associated with the company itself, and is not viewed as a generic term or common name for hotel services.
The Fed Circuit ruled that "the generic-descriptive-suggestive-arbitrary-fanciful continuum of words and their usage as marks of trade, there is no fixed boundary separating the categories; each word must be considered according to its circumstances.” In other words, while generic terms cannot themselves be registered as trademarks, descriptives may acquire distinctiveness and serve as a trademark.
But, the Court did not side with Hotels.com that that had happened in this instance. It agreed with the TTAB that "hotels" identified the core component of the services at issue, and that “hotels.com” was the functional equivalent of granting a service mark to the unadorned word, “hotels,” which it was not about to do. In short, the Court found that the combination of “hotels” and “.com” did not produce a new meaning when used in combination with one another. It held that “registrability does not depend on the .com combination.”
So, Hotels.com is left without registered mark in the brand it has worked so hard to develop. What does this tell us? Talk to a trademark attorney before selecting a a mark in which you intend to invest mucho money? Now there's an idea!
Friday, July 24, 2009
Friday, July 17, 2009
Twitter: Password Security Breach
Was interviewed by the L.A. Times on this topic. The article is very interesting (my quoted comment just makes for a pithy conclusion). Here is the link http://latimesblogs.latimes.com/technology/2009/07/leaked-twitter-documents-security.html
Wednesday, July 15, 2009
TechCrunch Publishes Confidential, Internal Twitter Documents
Techno/news website TechCrunch today published confidential, internal documents from Twitter, including Twitter’s financial projections (o.k., while it may be unseemly to repeat: Twitter projected it would bring in $400,000 in revenue this quarter and $4 million during the fourth quarter), and a document showing an internal discussion about a proposed reality television show (do we really need another? How about one in which we watch an over-worked lawyer typing out his blog in between sips of coffee and hoping to finish before his wife calls and says “If you’re not billing, come home!”).
Why would TechCrunch do this? Well, it’s fabulous publicity. It’s snarky, it’s quasi-newsworthy, it’s provoking. It will drive up traffic to their site, and thus increase (dramatically) their relevance and their value. Bingo! But, when the dust settles and the news moves to something more relevant (FLASH: Michael Jackson NOT Really Dead; Spotted at Disneyland’s Toontown), I suspect there will be some legal bills to pay.
As I’ve said before, stuffing your site with high quality, original content is an excellent way to increase readership and web traffic. Stuffing it with content poached from another site will only lead to trouble (or, as the case may be, increased readership and web traffic). Copyright protects a wide range of works being reproduced without the permission of the copyright owner. 17 U.S.C. § 102. This would include many of the internal documents TechCrunch decided to republish. Perhaps they’ve forgotten that the owner of the copyright has the sole right to authorize a reproduction of the work, distribute copies, or display it publicly. 17 U.S.C. § 106.
Or maybe they’ve decided to test the limit of a fair use defense. Remember the fair use doctrine? As the U.S. Supreme Court observed in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, “some opportunity for fair use of copyrighted materials [is] necessary to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and useful Arts. . .’.” I’ll bet my bonus that TechCrunch will argue that the fair use doctrine permits its republication because it was intended to spur discussion and debate (under that doctrine, as codified in 17 U.S.C. § 107, short quotations used “for purposes such as criticism, comment, news reporting, teaching … scholarship or research [are] not an infringement of copyright”).
Uh-huh.
But the analysis doesn’t stop there. Courts evaluate fair use by considering four factors: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of copying, and (4) the market effect. The most significant is the last one. If the copy lessens the demand for the original work, it’s difficult to claim fair use. On the other hand, if the copy is used strictly for purposes of parody, criticism, or news reporting, it’s more likely to be deemed “fair.” So if you happen to receive confidential, internal Twitter documents, and truly believe that they are news worthy, wouldn’t it be best to discuss them generally, quote selectively, and adhere to the principal that “less is more,” rather than “more and more and more”? Well, maybe. I suppose TechCrunch could still argue that what it took had no effect on the market, so taking more (ok, all) of the material didn’t reduce it’s value, but the better approach might have been to exercise some restraint from the get go.
Moreover, even if TechCrunch avoids liability on copyright grounds, it could still face a claim for misappropriation of trade secrets or unfair competition under California Business and Professions Code §17200 (which broadly applies protect against unfair and “unethical” conduct).
And notably, it does not appear that TechCruch would have much of a defense these claims under the Telecommunications Act of 1996, 47 USC § 230(c). As we’ve seen recently, that is a fairly robust Section that makes providers of interactive computer services immune from liability for content created by third parties. That is, the service providers are immune when sued “as the publisher or speaker of any information provided by” someone else. 47 U.S.C. § 230(c). For example, courts have found that this Section shielded the publisher where third party content was posted on a roommate matching site (See Fair Housing Council v. Roommate.Com, 489 F.3d 921 (9th Cir. 2007)); an on line newsletter (Batzel v. Smith, 333 F.3d 1018, 1031 (9th Cir. 2003)); and a blog entitled “ripoffreport.com” that warned consumers about unscrupulous practices and bad service. Certainly, Section 230(c) has also been used as a defense to claims of negligent misrepresentation, interference with prospective advantage, unfair business practices. But Section 230(c) loses its shielding strength where the service provider itself is deemed the speaker/poster of the content.
By the way, this is what Twitter posted on its blog about this: “We are in touch with our legal counsel about what this theft means for Twitter, the hacker, and anyone who accepts and subsequently shares or publishes these stolen documents. We’re not sure yet exactly what the implications are for folks who choose to get involved at this point but when we learn more and are able to share more, we will.”
Oh, I’m sure of it.
On the horizon (or so I predict): Twitter sends TechCrunch a “take down notice” pursuant to the Digital Millennium Copyright Act (17 U.S.C. §§ 512(c)), and then possibly sues; TechCrunch sees a big up tic in hits, and enjoys its time in the spotlight.
Why would TechCrunch do this? Well, it’s fabulous publicity. It’s snarky, it’s quasi-newsworthy, it’s provoking. It will drive up traffic to their site, and thus increase (dramatically) their relevance and their value. Bingo! But, when the dust settles and the news moves to something more relevant (FLASH: Michael Jackson NOT Really Dead; Spotted at Disneyland’s Toontown), I suspect there will be some legal bills to pay.
As I’ve said before, stuffing your site with high quality, original content is an excellent way to increase readership and web traffic. Stuffing it with content poached from another site will only lead to trouble (or, as the case may be, increased readership and web traffic). Copyright protects a wide range of works being reproduced without the permission of the copyright owner. 17 U.S.C. § 102. This would include many of the internal documents TechCrunch decided to republish. Perhaps they’ve forgotten that the owner of the copyright has the sole right to authorize a reproduction of the work, distribute copies, or display it publicly. 17 U.S.C. § 106.
Or maybe they’ve decided to test the limit of a fair use defense. Remember the fair use doctrine? As the U.S. Supreme Court observed in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, “some opportunity for fair use of copyrighted materials [is] necessary to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and useful Arts. . .’.” I’ll bet my bonus that TechCrunch will argue that the fair use doctrine permits its republication because it was intended to spur discussion and debate (under that doctrine, as codified in 17 U.S.C. § 107, short quotations used “for purposes such as criticism, comment, news reporting, teaching … scholarship or research [are] not an infringement of copyright”).
Uh-huh.
But the analysis doesn’t stop there. Courts evaluate fair use by considering four factors: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of copying, and (4) the market effect. The most significant is the last one. If the copy lessens the demand for the original work, it’s difficult to claim fair use. On the other hand, if the copy is used strictly for purposes of parody, criticism, or news reporting, it’s more likely to be deemed “fair.” So if you happen to receive confidential, internal Twitter documents, and truly believe that they are news worthy, wouldn’t it be best to discuss them generally, quote selectively, and adhere to the principal that “less is more,” rather than “more and more and more”? Well, maybe. I suppose TechCrunch could still argue that what it took had no effect on the market, so taking more (ok, all) of the material didn’t reduce it’s value, but the better approach might have been to exercise some restraint from the get go.
Moreover, even if TechCrunch avoids liability on copyright grounds, it could still face a claim for misappropriation of trade secrets or unfair competition under California Business and Professions Code §17200 (which broadly applies protect against unfair and “unethical” conduct).
And notably, it does not appear that TechCruch would have much of a defense these claims under the Telecommunications Act of 1996, 47 USC § 230(c). As we’ve seen recently, that is a fairly robust Section that makes providers of interactive computer services immune from liability for content created by third parties. That is, the service providers are immune when sued “as the publisher or speaker of any information provided by” someone else. 47 U.S.C. § 230(c). For example, courts have found that this Section shielded the publisher where third party content was posted on a roommate matching site (See Fair Housing Council v. Roommate.Com, 489 F.3d 921 (9th Cir. 2007)); an on line newsletter (Batzel v. Smith, 333 F.3d 1018, 1031 (9th Cir. 2003)); and a blog entitled “ripoffreport.com” that warned consumers about unscrupulous practices and bad service. Certainly, Section 230(c) has also been used as a defense to claims of negligent misrepresentation, interference with prospective advantage, unfair business practices. But Section 230(c) loses its shielding strength where the service provider itself is deemed the speaker/poster of the content.
By the way, this is what Twitter posted on its blog about this: “We are in touch with our legal counsel about what this theft means for Twitter, the hacker, and anyone who accepts and subsequently shares or publishes these stolen documents. We’re not sure yet exactly what the implications are for folks who choose to get involved at this point but when we learn more and are able to share more, we will.”
Oh, I’m sure of it.
On the horizon (or so I predict): Twitter sends TechCrunch a “take down notice” pursuant to the Digital Millennium Copyright Act (17 U.S.C. §§ 512(c)), and then possibly sues; TechCrunch sees a big up tic in hits, and enjoys its time in the spotlight.
You're Invited! BC Edge, July 29, 2009, Noon Pacific Time
If you're reading this, you're invited to our next “BC Edge” roundtable on July 29 at noon PST.
This quarter's topic: "The Copyright Alchemists: From 'Happy Birthday' to 'This Land is Your Land,' Making Millions from Songs in the Public Domain."
The purpose of this roundtable is to bring together Bryan Cave attorneys from all practice areas (not just IP), guests and clients who share an interest in cutting edge intellectual property issues.
This quarter's topic will focus on instances where licensors have made money licensing of songs which they may -- on closer inspection -- not actually own.
Our special guests will include the Electronic Frontier Foundation's Fred von Lohmann, George Washington University's Robert Braunies, and music law attorney Michael Perlstein.
As with every BC Edge, the topic I've outlined is just the beginning: where the conversation goes from there is up to all who participate.
I hope that will include you.
Toll Free Dial In Number: 800-300-1596
Passcode: 949-223-7173
This quarter's topic: "The Copyright Alchemists: From 'Happy Birthday' to 'This Land is Your Land,' Making Millions from Songs in the Public Domain."
The purpose of this roundtable is to bring together Bryan Cave attorneys from all practice areas (not just IP), guests and clients who share an interest in cutting edge intellectual property issues.
This quarter's topic will focus on instances where licensors have made money licensing of songs which they may -- on closer inspection -- not actually own.
Our special guests will include the Electronic Frontier Foundation's Fred von Lohmann, George Washington University's Robert Braunies, and music law attorney Michael Perlstein.
As with every BC Edge, the topic I've outlined is just the beginning: where the conversation goes from there is up to all who participate.
I hope that will include you.
Toll Free Dial In Number: 800-300-1596
Passcode: 949-223-7173
Friday, June 12, 2009
REGISTER YOUR MARKS WITH FACEBOOK BEFORE POTENTIAL CYBERSQUATTERS DO
REGISTER YOUR MARKS WITH FACEBOOK BEFORE POTENTIAL CYBERSQUATTERS DO
Facebook, the social networking web site, just announced that commencing Saturday, June 13 at 12:01 AM EDT, it will allow its members to create personalized URLs for their Facebook pages. For example,.
To protect trademark rights holders by blocking potential cybersquatters from registering your brands as URLs, Facebook provides a means of reserving rights in marks via their trademark protection contact form available at the following web page: http://www.facebook.com/help/contact.php?show_form=username_rights.
Thus, to protect your Intellectual Property rights in your brands, I strongly recommend registering your marks with Facebook to prevent cybersquatters from adopting your brands for personalized URLs.
Please contact me if you require any assistance in reserving and registering your brands with Facebook as soon as possible, keeping in mind that the deadline is this Saturday.
jonathan.pink@bryancave.com
Facebook, the social networking web site, just announced that commencing Saturday, June 13 at 12:01 AM EDT, it will allow its members to create personalized URLs for their Facebook pages. For example,
To protect trademark rights holders by blocking potential cybersquatters from registering your brands as URLs, Facebook provides a means of reserving rights in marks via their trademark protection contact form available at the following web page: http://www.facebook.com/help/contact.php?show_form=username_rights.
Thus, to protect your Intellectual Property rights in your brands, I strongly recommend registering your marks with Facebook to prevent cybersquatters from adopting your brands for personalized URLs.
Please contact me if you require any assistance in reserving and registering your brands with Facebook as soon as possible, keeping in mind that the deadline is this Saturday.
jonathan.pink@bryancave.com
Monday, April 20, 2009
Pirates! And Even More Frightening, Polititians!
An interesting confluence of events brings us back to my new favorite question: can the rights of copyright owners survive in the era of BitTorrent? Stated even less elegantly, if “content yearns to be free” (which is some silly phrase I must’ve heard somewhere that, nonetheless, succinctly sums up this whole dichotomy between copyright owners and on-line content thieves), what is to become of that precious right held by the content creator to actually make money from his or her creations?
Slight digression: as some of you know, I am a cartoonist. I like to say “I was syndicated before I went to law school.” I like to say it because it’s true, and well it also sounds pretty cool when delivered in an off-hand way. Try it, you’ll see. It certainly beats “I worked at the Dairy Queen.” Try that one too and you’ll see what I mean. Suave, cool and artsy vs. solid, clear-cut loser. So where was I going with this? Only that, as a content creator, I understand the desire to make some dough off of your art. Don’t get me wrong, I’d give my stuff away – and have (and still kick myself for not giving it to the National Lampoon when they said, “We love it, but we’re out of money thanks to Sam Gross over paying for everything”) – but when it comes down to it, I’d much rather get paid. It’s like getting paid to eat ice cream. So the point that I’m taking way to long to make is that wrong, uncool and just plain wicked to deprive a creator of the right to profit from his or her creation by downing-loading, copying, “sharing” or stealing it off of, over or through the Web. If you disagree, just let me know when you wouldn’t mind my stopping by to take anything of your that I might like for free.
Ok, back to our program. . . . So the interesting confluence of events are: (1) the illegal copying by a California Congressional candidate of a Don Henley song (and his vehement assertion that he had a right to copy based on the First Amendment); (2) a ruling in the Pirate Bay case (involving a P2P site not entirely dissimilar to Napster) and the political fall out from that ruling; and (3) the technology on the horizon that will make all this copying even easier.
The Wacky Politician – I am generally distrustful of politicians. I suppose that I’m of the opinion that they are self-serving, disingenuous and a-moral until proven otherwise. That said, I am nonetheless constantly surprised by what scumbags some of these people are (although generally so very, very nice when you meet them in person). Enter Republican (it figures) candidate for the U.S. Senate, Charles DeVore. According to the former Eagles rock star, Don Henley (free association: I once saw them in concert), the Republican (it figures) used Henley's songs "The Boys of Summer" and "All She Wants to Do Is Dance" in two campaign videos without Henley’s authorization. Note to would-be Republican (it figures) Senator: that’s copyright infringement, bucko.
DeVore (Republican; it figures) responded by claiming he had a First Amendment right to use the work. Huh? What, does he think no one’s listening to him? Maybe that’s how the Republicans do it. (Another digression: is it just me, or does it seem like a lot of Republicans went to USC? And why do those people from USC think it’s something to be proud of? And why do they buy those flags and hang them from their house and act as if they’re – well, Republicans all the time?) Anyway, so Henley sues, and DeVore plans to counter-claim and – even better – now apparently intends to use Henley’s music as part of a parody song, which you will recall may then entitle him to a fair use defense. Maybe it’s just me, but I bet that was his lawyer’s idea and not DeVore’s (the Republican; it figures).
For those of you who don’t remember much about the fair use doctrine, it permits short quotations used “for purposes such as criticism, comment, news reporting, teaching … scholarship or research [are] not an infringement of copyright.” 17 U.S.C. § 107. Courts evaluate fair use by considering four factors: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of copying, and (4) the market effect. The most significant is the last one. If the copy lessens the demand for the original work, it’s difficult to claim fair use. On the other hand, if the copy is used strictly for purposes of parody, criticism, or news reporting, it’s more likely to be deemed “fair.”
The Pirate Bay Ruling -- The Pirate Bay is a Swedish website that indexes and tracks bittorrent (.torrent) files. Since its humble beginnings in 2003 (it was created by the Swedish anti-copyright organization Piratbyrån – translated “The Piracy Bureau”), it has been involved in a number of lawsuits as both plaintiff and defendant (although not at the same time). The L.A. Times described the site as "one of the world's largest facilitators of illegal downloading", and "the most visible member of a burgeoning international anti-copyright—or pro-piracy—movement". By the end of 2008, it claimed to have over 25 million unique peers, meaning users who upload torrent files which link to the copyrighted material. With success like that, it will come as no surprise that several days ago, it’s principals were found guilty of criminal copyright infringement and sentenced to one year in a Swedish prison. (Which I imagine is filled with furnishings from Ikea, and serves those spicy ginger cookies to the prisoners.)
Surprisingly, this ruling has caused mass demonstrations against the jailing of these “pirates,” and moreover, the has apparently caused many young Swedes to affiliate with ‘The Pirate Party', a new political party that supports free file sharing for non-commercial use. According to press reports I have read, support for the Pirate Party had now surpassed that of the Swedish Green Party. (Huh, here we are, back on politics.) I find this fascinating because it strongly suggests that those who so firmly believe that “content is yearning to be free” (even if – surprisingly -- the contents of their own homes does not), will seek such homeostasis through political change. And why not? If people so strongly believe that the content created by others should belong to all – and not to those who created it alone – let’s put this thing to a vote. We know how Charles DeVore would vote.
Technology On the Horizon – And now for the coup de grace: Bittorrent tracking sites such as the Pirate Bay are on the verge of obsolescence. The technology poised to overtake them includes applications such as the Tribler, which – unlike those bittorrent file sharing applications that need to be pointed at torrent tracking sites such as the Pirate Bay, conducts its searches over a network of fellow bittorent users, thereby avoiding the centralized tracking sites entirely. Moreover, with applications such as iPredator, downloading can happen anonymously, meaning that copyright owners and prosecutors will have an even more difficult time locating the infringement and the infringers. Chuck DeVore, party of one? Your table is ready.
One last note: We’ll be discussing the inconvenient mismatch between the real world of P2P file sharing and copyright jurisprudence at the next meeting of BC Edge, April 29, 2009 at 12 noon Pacific Time. If you’d like to opine on whether copyright owners can survive in an era of fast evolving, dynamic, disruptive innovation, and whether the fair use doctrine should apply to file sharing, just send me an email and I’ll respond with the call-in number and pass code. My email is jonathan.pink@bryancave.com.
Slight digression: as some of you know, I am a cartoonist. I like to say “I was syndicated before I went to law school.” I like to say it because it’s true, and well it also sounds pretty cool when delivered in an off-hand way. Try it, you’ll see. It certainly beats “I worked at the Dairy Queen.” Try that one too and you’ll see what I mean. Suave, cool and artsy vs. solid, clear-cut loser. So where was I going with this? Only that, as a content creator, I understand the desire to make some dough off of your art. Don’t get me wrong, I’d give my stuff away – and have (and still kick myself for not giving it to the National Lampoon when they said, “We love it, but we’re out of money thanks to Sam Gross over paying for everything”) – but when it comes down to it, I’d much rather get paid. It’s like getting paid to eat ice cream. So the point that I’m taking way to long to make is that wrong, uncool and just plain wicked to deprive a creator of the right to profit from his or her creation by downing-loading, copying, “sharing” or stealing it off of, over or through the Web. If you disagree, just let me know when you wouldn’t mind my stopping by to take anything of your that I might like for free.
Ok, back to our program. . . . So the interesting confluence of events are: (1) the illegal copying by a California Congressional candidate of a Don Henley song (and his vehement assertion that he had a right to copy based on the First Amendment); (2) a ruling in the Pirate Bay case (involving a P2P site not entirely dissimilar to Napster) and the political fall out from that ruling; and (3) the technology on the horizon that will make all this copying even easier.
The Wacky Politician – I am generally distrustful of politicians. I suppose that I’m of the opinion that they are self-serving, disingenuous and a-moral until proven otherwise. That said, I am nonetheless constantly surprised by what scumbags some of these people are (although generally so very, very nice when you meet them in person). Enter Republican (it figures) candidate for the U.S. Senate, Charles DeVore. According to the former Eagles rock star, Don Henley (free association: I once saw them in concert), the Republican (it figures) used Henley's songs "The Boys of Summer" and "All She Wants to Do Is Dance" in two campaign videos without Henley’s authorization. Note to would-be Republican (it figures) Senator: that’s copyright infringement, bucko.
DeVore (Republican; it figures) responded by claiming he had a First Amendment right to use the work. Huh? What, does he think no one’s listening to him? Maybe that’s how the Republicans do it. (Another digression: is it just me, or does it seem like a lot of Republicans went to USC? And why do those people from USC think it’s something to be proud of? And why do they buy those flags and hang them from their house and act as if they’re – well, Republicans all the time?) Anyway, so Henley sues, and DeVore plans to counter-claim and – even better – now apparently intends to use Henley’s music as part of a parody song, which you will recall may then entitle him to a fair use defense. Maybe it’s just me, but I bet that was his lawyer’s idea and not DeVore’s (the Republican; it figures).
For those of you who don’t remember much about the fair use doctrine, it permits short quotations used “for purposes such as criticism, comment, news reporting, teaching … scholarship or research [are] not an infringement of copyright.” 17 U.S.C. § 107. Courts evaluate fair use by considering four factors: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of copying, and (4) the market effect. The most significant is the last one. If the copy lessens the demand for the original work, it’s difficult to claim fair use. On the other hand, if the copy is used strictly for purposes of parody, criticism, or news reporting, it’s more likely to be deemed “fair.”
The Pirate Bay Ruling -- The Pirate Bay is a Swedish website that indexes and tracks bittorrent (.torrent) files. Since its humble beginnings in 2003 (it was created by the Swedish anti-copyright organization Piratbyrån – translated “The Piracy Bureau”), it has been involved in a number of lawsuits as both plaintiff and defendant (although not at the same time). The L.A. Times described the site as "one of the world's largest facilitators of illegal downloading", and "the most visible member of a burgeoning international anti-copyright—or pro-piracy—movement". By the end of 2008, it claimed to have over 25 million unique peers, meaning users who upload torrent files which link to the copyrighted material. With success like that, it will come as no surprise that several days ago, it’s principals were found guilty of criminal copyright infringement and sentenced to one year in a Swedish prison. (Which I imagine is filled with furnishings from Ikea, and serves those spicy ginger cookies to the prisoners.)
Surprisingly, this ruling has caused mass demonstrations against the jailing of these “pirates,” and moreover, the has apparently caused many young Swedes to affiliate with ‘The Pirate Party', a new political party that supports free file sharing for non-commercial use. According to press reports I have read, support for the Pirate Party had now surpassed that of the Swedish Green Party. (Huh, here we are, back on politics.) I find this fascinating because it strongly suggests that those who so firmly believe that “content is yearning to be free” (even if – surprisingly -- the contents of their own homes does not), will seek such homeostasis through political change. And why not? If people so strongly believe that the content created by others should belong to all – and not to those who created it alone – let’s put this thing to a vote. We know how Charles DeVore would vote.
Technology On the Horizon – And now for the coup de grace: Bittorrent tracking sites such as the Pirate Bay are on the verge of obsolescence. The technology poised to overtake them includes applications such as the Tribler, which – unlike those bittorrent file sharing applications that need to be pointed at torrent tracking sites such as the Pirate Bay, conducts its searches over a network of fellow bittorent users, thereby avoiding the centralized tracking sites entirely. Moreover, with applications such as iPredator, downloading can happen anonymously, meaning that copyright owners and prosecutors will have an even more difficult time locating the infringement and the infringers. Chuck DeVore, party of one? Your table is ready.
One last note: We’ll be discussing the inconvenient mismatch between the real world of P2P file sharing and copyright jurisprudence at the next meeting of BC Edge, April 29, 2009 at 12 noon Pacific Time. If you’d like to opine on whether copyright owners can survive in an era of fast evolving, dynamic, disruptive innovation, and whether the fair use doctrine should apply to file sharing, just send me an email and I’ll respond with the call-in number and pass code. My email is jonathan.pink@bryancave.com.
Tuesday, April 7, 2009
Second Circuit Revisits Key Word Debate
Breaking News (if you consider it still “breaking” when in fact it occurred a couple of days ago).
The Second Circuit – the only court to firmly hold that key word advertising does not constitute trademark infringement – has overturned a lower court’s decision to dismiss Rescuecom Corp.’s trademark infringement claim against Google based on precisely such facts (e.g. selling the term Rescuecom as a keyword to Rescue’s competitors), and remanded the case for further proceedings. (Rescuecom Corp. v. Google Inc., case number 06-4881).
In making this ruling, the Second Circuit stated that, by selling the Rescuecom’s mark as a keyword to advertisers, Google’s conduct was likely to cause confusion, at least with respect to search-engine users who searched for Rescuecom’s trademark on Google. This, the Court found that Rescuecom had adequately alleged a Lanham Act claim. The Court however did not express any opinion as to whether Rescuecom could prevail on that claim.
You will recall, the Second Circuit previously ruled in 1-800 Contacts Inc. v. WhenU.com Inc. that WhenU’s triggered pop-up adds touting 1-800s competitors did not constitute trademark infringement because it was not a “use in commerce” as required under the Lanham Act. To a large degree, that case turned on the fact that WhenU did not use, display, or sell the 1-800 trademark to competitors. Here, however, Google is alleged to do all this and more.
We’ll see where this goes. It will be particularly interesting given the fact that the Second Circuit has been in the minority with respect to key word cases.
The Second Circuit – the only court to firmly hold that key word advertising does not constitute trademark infringement – has overturned a lower court’s decision to dismiss Rescuecom Corp.’s trademark infringement claim against Google based on precisely such facts (e.g. selling the term Rescuecom as a keyword to Rescue’s competitors), and remanded the case for further proceedings. (Rescuecom Corp. v. Google Inc., case number 06-4881).
In making this ruling, the Second Circuit stated that, by selling the Rescuecom’s mark as a keyword to advertisers, Google’s conduct was likely to cause confusion, at least with respect to search-engine users who searched for Rescuecom’s trademark on Google. This, the Court found that Rescuecom had adequately alleged a Lanham Act claim. The Court however did not express any opinion as to whether Rescuecom could prevail on that claim.
You will recall, the Second Circuit previously ruled in 1-800 Contacts Inc. v. WhenU.com Inc. that WhenU’s triggered pop-up adds touting 1-800s competitors did not constitute trademark infringement because it was not a “use in commerce” as required under the Lanham Act. To a large degree, that case turned on the fact that WhenU did not use, display, or sell the 1-800 trademark to competitors. Here, however, Google is alleged to do all this and more.
We’ll see where this goes. It will be particularly interesting given the fact that the Second Circuit has been in the minority with respect to key word cases.
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